Japan’s economy has slipped into recession
for the first time since 2015 in the last quarter, putting the nation on course
for its deepest slump as the coronavirus crisis ravages businesses and
consumers. First-quarter GDP data revealed Japan’s GDP shrinks 3.4% in March
2020 amid pandemic, follows a 6.4% decline during the last quarter of 2019.
As widely spreading the serious impact of the COVID-19 pandemic on the economy, the Japan Patent Office (JPO) announced, on July 1, 2020, a status update on its operations during the pandemic, including the extent to which trademark applications are declining.
The number of trademark applications filed in the Japan Patent Office (JPO) fell by a whopping 24.3% to 55,353 in the first four months 2020. In the meantime, Patent fell by 5.7% and Design fell by 3.9% for the same period.
The data illustrated how the coronavirus pandemic is considerably hampering new trademark applications, compared with other intellectual properties, in Japan.
On June 17, 2020, the Japan IP High Court affirmed the JPO’s rejection of the “I♡JAPAN” mark in relation to various goods of class 14,16,18 and 24 due to a lack of distinctiveness. [Judicial case no. Reiwa 1(Gyo-ke)10164]
I♡JAPAN
The disputed mark consists of the capital letter “I”, followed by a red heart symbol, below which are the capital letters “JAPAN” (see below). The mark filed by CREWZ COMPANY, a Japanese merchant on April 17, 2018, over various goods in class 14, 16, 18, and 24 [TM application no. 2018-049161].
Noticeably, the JPO already allowed trademark registration for the same mark on apparels in class 25 on March 27, 2015, filed by the applicant [TM Registration no. 5752985]. Regardless of it, the examiner refused disputed mark in contravention of Article 3(1)(vi) of the Trademark Law.
Article 3(1)(vi) is a provision to comprehensively prohibit from registering
any mark lacking inherent distinctiveness.
Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark: (vi) is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.
JPO decision
The JPO Appeal Board sustained the examiner’s refusal and decided to reject disputed mark by stating that we are nowadays accustomed to finding goods bearing the “I♡” logo followed by a geographical indication, which represents a strong devotion or attachment to the area/city in its entirety. In fact, the “I♡JAPAN” design is commonly used on several goods as a symbol to support the Japanese sports team or souvenirs for tourists. If so, the design shall not be exclusively occupied by a specific entity. Under the circumstances, relevant consumers are unlikely to conceive the disputed mark as a source indicator of the applicant. Thus, the mark shall be rejected in contravention of Article 3(1)(vi) and the examiner did not error. [Appeal case no. 2018-16957]
To contend against the decision, the applicant filed an appeal to the IP High Court.
IP High Court ruling
The IP High Court dismissed the applicant’s allegation entirely, stating that the disputed mark gives rise to the meaning of “I love JAPAN”. The court found the “I♡” logo followed by a geographical indication is commonly used to appeal a strong devotion or attachment to the area/city. Inter alia, various merchants promote goods bearing the “I♡JAPAN” design as a sign of their support to Japan or the Japanese sports team. If so, relevant consumers and traders would not conceive disputed mark as a source indicator of goods in question, but merely a symbol to represent their devotion and support to Japan. Therefore, the disputed mark shall not be registrable under n contravention of Article 3(1)(vi).
Besides, the court found the fact of a precedent registration for the same mark in a different class would not affect the distinctiveness of disputed mark since it does not have a legal effect to bind subsequent examination in assessing registrability of a junior mark under Article 3(1)(vi).
On May 20, 2020, the Japan IP High Court denied the JPO decision and sided with Apple Inc. by finding the “CORE ML” mark is dissimilar to senior trademark registration no. 5611369 for word mark “CORE” in connection with computer software of class 9. [Case no. Reiwa1(Gyo-ke)10151]
CORE ML
Apple Inc. filed a trademark application
for word mark “CORE ML” in standard character by designating computer software
in class 9 on November 6, 2017 (TM App no. 2017-145606).
Apple’s Core ML is its own framework for
Machine Learning used across Apple products for performing fast prediction or
inference with easy integration of pre-trained machine learning models on the
edge, which allows you to perform real-time predictions of live images or video
on the device.
JPO decision
The Japan Patent Office (JPO) rejected “CORE ML” in contravention of Article 4(1)(xi) of the Trademark Law due to a conflict with senior trademark registration no. 5611369 for word mark “CORE” in standard character over electronic machines, computer software, and other goods in class 9 owned by Seiko Holdings Corporation.
Article 4(1)(xi) is a provision to prohibit from registering a junior mark that is deemed identical with, or similar to, any senior registered mark.
In the decision, the JPO stated applied mark apparently consists of two words, “CORE” and “ML”. The term “CORE”, a familiar English word meaning ‘a central and foundational part’, would play a role of source indicator in connection with the goods in question. In the meantime, “ML” is a descriptive term since it is commonly used as an abbreviation of ‘Machine Learning’ in the computer software industry. If so, it is permissible to select the term “CORE” as a dominant portion of applied mark and compare it with the cited mark “CORE”.
To contend against the decision, Apple Inc.
filed an appeal to the IP High Court.
IP High Court ruling
The IP High Court, at the outset, referred to the Supreme Court ruling in 2008 which established the criterion to grasp a composite mark in its entirety in the assessment of similarity of the mark.
“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of mark simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”
Based on the criteria, the court found that applied mark
shall be assessed in its entirety on the following grounds:
“CORE” would be merely recognized as a term to mean ‘a central and foundational part’ in connection with goods in question.
It is unlikely that relevant consumers at the sight of “CORE ML” used on computer software conceive the term “ML” as an abbreviation of ‘machine learning’. If so, “ML” would not give rise to any specific meaning.
The above facts suggest that “CORE” would never play a dominant role and “ML” shall not be considered less distinctive than “CORE” as a source indicator in view of the concept.
From appearance and sound, there is no reasonable ground to believe “CORE” and “ML” shall be recognized individual and separable.
Based on the foregoing, the court pointed out the JPO erred in finding applied mark appropriately and decided that the applied mark “CORE ML” is deemed dissimilar to the cited mark “CORE” as a whole given the remarkable difference in sound and appearance, even if both marks resemble in concept.
The Japan Patent Office (JPO) allowed trademark registration of “Ghana” in connection with chocolates of class 30 by finding acquired distinctiveness as a source indicator of Lotte Co., Ltd., a Korea-based confectionary company. [Appeal case no. 2019-8784, Gazette issued date: May 29, 2020]
Lotte “Ghana” Chocolates
Ghana chocolate is Lotte’s signature product and one of the most beloved chocolate in Japan for many years.
Lotte Co., Ltd. launched chocolates bearing the “Ghana” mark in 1964. Since then, the mark has been prominently indicated on the packages.
[“Ghana” chocolate package back in 1970’s – TM Reg no. 892507]
In 1994 of the 30th anniversary, Lotte slightly changed the design of its package and the mark and added different tastes of “Ghana” chocolates, e.g. milk chocolates, white chocolates. On new packages, the “Ghana” mark is much conspicuously and largely indicated than before.
[Current package – TM Reg no. 5405402, registered on April 8, 2011]
On December 8, 2017, Lotte sought trademark registration for the current “Ghana” logo (see below) over chocolates in class 30. [TM application no. 2017-161593]
Article 3(1)(iii) & 4(1)(xvi)
The JPO rejected the “Ghana” mark in contravention of Article 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law by stating that “Ghana” is a geographical indication corresponding to Republic of Ghana, a country of western Africa, situated on the coast of the Gulf of Guinea, one of the major producers of high-quality cocoa beans. Therefore, relevant consumers and traders at the sight of chocolates bearing the “Ghana” mark would merely conceive it of the origin of cocoa beans. Besides, whenever the mark is used on chocolates not made from Ghana cocoa beans, it inevitably misleads the quality of goods.
Acquired distinctiveness
Lotte argued the “Ghana” mark shall be protectable based on Article 3(2), even if nominally unregistrable under Article 3(1)(iii) because it has acquired distinctiveness as a result of substantial and continuous use on chocolates in Japan.
Article 3(2) of the Trademark Law
Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.
Appeal Board decision
The Appeal Board affirmed examiner’s
rejection pertinent to lack of distinctiveness in connection with goods in
question, however, the Board held that the “Ghana” mark would function as a
source indicator of Lotte chocolates consequently and thus registrable based on
the acquired distinctiveness under Article 3(2).
Allegedly Lotte “Ghana” chocolates hold
top-ranked market share in Japan since 2017. In 2008, Lotte sold more than 100
million bars of “Ghana” chocolates. The annual sales exceeded 1.2 billion JP-yen
in 2017.
Lotte has long been aggressive not only to advertise “Ghana” chocolates in newspapers, TV commercials, trains, and stations, but also to launch lots of chocolate events and campaigns on Valentine’s Day or Mother’s Day nationwide, and collaborations with retailers, hotels restaurants featuring ‘Ghana’ chocolates.
Due to their marketing efforts, Lotte “Ghana”
brand chocolates could win several awards, e.g. Monde Selection ‘Gold Award’
(2008, 2009, 2010), D2C ‘Marketing Award’ (2002), The Japan Food Journal ‘Long
Seller Award’ (2008), DENTSU ‘Excellent Award’ (2009, 2010, 2011), JR East ‘Excellent
Advertisement Award’’.
Besides, “Ghana” chocolates ranked top in the
brand survey published by Nikkei Research in 2016.
Lotte could eventually achieve registration of the “Ghana” mark on chocolates, but it spent more than five decades to that end.
Interestingly. Lotte has registered the “GANA” mark on goods of class 30 including chocolates since 1990. It must aim to prevent a third party from registering any mark similar to “Ghana”.
In an appeal decision, the Japan Patent Office (JPO) overturned the examiner’s rejection and decided to register trademark “LEPS” by finding dissimilarity to senior registration for mark “LEPUS” even if both marks designate similar goods in class 12. [Appeal case no. 2019-6626, Gazette issued date: March 27, 2020]
LEPS
Applicant, GS Yuasa Corporation, filed a trademark application for term “LEPS” in standard character over solar batteries, power distribution or control machines, and apparatus, rotary converters, phase modifiers of class 12 on December 18, 2017 (TM application no. 2017-165431).
JPO examiner rejected the applied mark in
contravention of Article 4(1)(xi) of the Trademark Law by citing senior trademark
registration no. 3194818 for mark “LEPUS”
Article 4(1)(xi) is a provision to prohibit registering a junior mark which is
identical with, or similar to, any senior registered mark.
LEPUS
Cited mark “LEPUS” (see below), owned by Mitsubishi Motors Corporation, has been registered since September 1996 over automobiles and their parts and fittings, two-wheeled motor vehicles, bicycles, and their parts and fittings, AC motors or DC motors for land vehicles in class 12.
On April 25, 2019, GS Yuasa filed an appeal
against the rejection and argued dissimilarity of the marks.
Appeal Board decision
In the decision, the Appeal Board held
that:
“From appearance, even if both marks start with “LEP” and end with “S”, with or without “U” in the middle of a short word consisting of four or five letters would be anything but negligible. Because of it, the marks as a whole give rise to a distinctive visual impression in the minds of relevant consumers. Accordingly, both marks are unlikely to cause confusion from appearance.
Applied mark “LEPS” is pronounced as “le-ps”. In the meantime, cited mark “LEPUS” shall be “le-pəs”. The difference in the 2nd sound, “p” and “pə”, would be influential in the overall pronunciation given both marks aurally consist of just three sounds. Due to the difference, both sounds can be distinguishable in tone and linguistic feeling when pronounced at a time.
Conceptually, applied mark is incomparable with cited mark since both marks would not give rise to any specific meaning at all.”
Based on the foregoing, the Board concluded: “applied mark “LEPS” would be deemed dissimilar to cited mark “LEPUS” from the global appreciation of the visual, aural and conceptual similarity of the marks in question, and based on the overall impression and association given by the marks to relevant traders and consumers with ordinary care“.
Consequently, the Board reversed the examiner’s rejection due to the dissimilarity of the marks even if the goods in question are similar and allowed registration of the applied mark (TM registration no. 6234714).
In an administrative appeal disputing trademark similarity between TM registration no. 5661343 for word mark “Antithesis” with its transliteration in Japanese katakana and junior application no. 2017-101730 for a mark consisting of “Antithesis” and the other eight English terms placed in 9 rows, JPO found both marks dissimilar and reversed the examiner’s rejection. [Appeal case no. 2019-652, Gazette issued date: March 27, 20]
TM
Registration no. 5661343
Cited mark, the term “Antithesis” with its transliteration in a Japanese katakana character (see below) has been registered over clothing, footwear, and other goods in class 25 since April 4, 2014.
Junior
Application no. 2017-101730
Applied mark, consisting of nine English terms “Imitation”, “Genuine”, “Chic”, “Rudeness”, “Confusion”, “Silence”, “Gentleman”, “Lady”, and “Antithesis” placed in 9 rows inside a black rectangle (see right), was applied for registration on August 1, 2017, over clothing, footwear, and other goods in class 25 by Element Rule Co., Ltd.
JPO examiner entirely rejected applied mark on the ground that the term “Antithesis” on the bottom row can play a role of source indicator independently because of overall configuration and space above the bottom row. If so, the applied mark as a whole shall be deemed similar to the cited mark.
The applicant filed an appeal against the rejection on May 20, 2019, and argued dissimilarity of both marks.
Appeal
Board decision
In
the decision, the Board found that:
“From the appearance, “Antithesis” on the bottom row shall not be separable since the term is written in the same font, color, size with other terms “Imitation”, “Genuine”, “Chic”, “Rudeness”, “Confusion”, “Silence” even if there is space in the trademark. Besides, nine terms do not give rise to any specific meaning in its entirety. Neither do eight terms except “Antithesis”. If so, there is no reasonable reason to believe that relevant consumers consider the term “Antithesis” on the bottom row or any other terms a dominant part of the applied mark. It rather does mark sense that applied mark shall be perceived as a whole displaying respective English word in a different row inside a black rectangle.”
Based on the foregoing, the Board held that the Examiner erred in finding the term “Antithesis” separable as an independent source indicator of the applied mark, and decided to reverse the examiner’s rejection.
I don’t quite agree with the Appeal Board decision. In my view, the respective term contained in a junior mark shall be considered separable unless it gives rise to different meanings in a tight combination with other distinctive terms.
The Japan Patent Office (JPO) dismissed a trademark opposition claimed by social media giant, Twitter, Inc. against trademark registration no. 6138010 for word mark “TWEET” in class 33 by finding the TWEET mark is relatively unknown as a source indicator of Twitter Inc. [Opposition case no. 2019-900193, Gazette issued date: April 24, 2020]
Opposed mark
A wordmark “TWEET” in standard character was filed by a Japanese sake brewery, Shirataki Sake on June 21, 2018, over Japanese sake [Nihonsyu]; sake, distilled rice spirits; sake substitute; Japanese white liquor [Shochu]; Japanese sweet rice-based mixed liquor [Shiro-zake]; Naoshi [Japanese liquor]; Japanese Shochu-based mixed liquor [Mirin]; western liquors; alcoholic fruit beverages; Japanese Shochu-based beverages [Chuhai]; Chinese liquors; flavored liquors in class 33, and published for opposition on May 14, 2019, after registration on April 12, 2019.
Opposition by Twitter, Inc.
On July 12, 2019, US social media giant,
Twitter, Inc. filed an opposition and argued opposed mark shall be revocable in
contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law
due to a likelihood of confusion with, or identical with its famous “TWEET”
mark registered in various classes other than 33.
Article 4(1)(xv)
Article 4(1)(xv) prohibits registering a trademark which is likely to cause confusion with the business of other entities.
Twitter is a ‘microblogging’ system that
allows users to send and receive short posts called “tweets”. Tweets can be up
to 140 characters long and can include links to relevant websites and
resources. The Japanese version of Twitter was launched in 2008 and its MAU (monthly
active users) has been increasing since. Compared to the American population,
35.7% of Japanese actively use Twitter actively while only 20.7% of Americans
actively use Twitter. Now, 17% of Twitter’s worldwide revenue comes from the
Japanese market.
Twitter, Inc. argued that the above facts suggest “TWEET” has acquired substantial reputation and popularity among the general public in Japan as a source indicator of the opponent.
Even though goods in dispute are remotely
associated with SNS services, a lot of alcoholic consumers have obviously made
use of Twitter and “tweet” since major breweries advertise their goods on
Twitter so frequently and gain a substantial number of followers on Twitter.
If so, relevant consumers of goods in dispute are likely to misconceive the source of goods bearing opposed mark with Twitter, Inc., or any entity systematically or economically connected with the opponent.
Board Decision
The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Twitter” in connection with a real-time communication service based on the produced evidence boasting more than 45 million MAU in Japan as of December 2018.
Meanwhile, the Board questioned if “TWEET” has been used as a source indicator of opponent business since the evidence shows the term has been used to indicate function or usage of Twitter in a descriptive manner. Consequently, the Board found “TWEET” is relatively unknown as a source indicator of Twitter Inc.
Based on the foregoing, the Board decided opposed mark shall not be revocable in contravention of Article 4(1)(xv) and (xix) since it is unlikely that relevant consumers conceive of the opponent or connect the alcoholic beverages bearing opposed mark “TWEET” with Twitter.
In a recent administrative decision, the Japan Patent Office (JPO) sided with Danjaq, LLC, and declared invalidation of a wordmark “BOND GIRL” written in a Japanese katakana character in contravention of Article 4(1)(vii) of the Trademark Law.
[Invalidation case no. 2019-890044, Gazette issued date: April 24, 2020]
Disputed mark
“BOND GIRL” written in a Japanese katakana character (see below) was filed to JPO on the service of ‘arranging, conducting, and organization of seminars’ in class 41 by a Japanese individual on November 4, 2015, and registered on December 2, 2016.
Opposition & Invalidation petition
by Danjaq, LLC
On March 9, 2017, just before the lapse of a two-months opposition period, Danjaq, LLC, the holding company responsible for the copyright and trademarks to the characters, elements, and other material related to James Bond on screen, filed an opposition to the disputed mark.
However, since Danjaq failed to supplement arguments
for opposition within a statutory period, the JPO decided to dismiss the opposition
entirely.
On August 2, 2019, Danjaq filed a petition
for invalidation and argued disputed mark shall be invalid in contravention of Article
4(1)(vii), (xv) and (xix) of the Trademark Law by citing world-famous cinematic
heroine “BOND GIRL” in the James Bond film series “007”.
Article 4(1)(vii)
Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration.
In the petition, Danjaq argued “BOND GIRL” has appeared as a love interest of James Bond in the movies for over 55 years since 1962. Due to frequent appearances in magazines, other public media, and various events pertinent to the Japes Bond movie, the name and sign of “BOND GIRL” has been well-known for cinematic heroine in association with the film series “007”.
If so, it is presumed that the applicant intentionally applied disputed mark with an aim to monopolize the term. Since the applicant does not have any legal interest with Danjaq, a legitimate owner of trademarks and copyrights pertaining to the 007 movies, it must impermissibly cause not only damage to public order but the disorder in domestic and foreign trade.
Invalidation Board decision
The Invalidation Board initially noted that the James Bond film series “007” is world-widely known motion pictures. From the produced evidence, the cinematic heroine “Bond girl” has regularly attracted audiences through screens, magazines, and promotional events of the movie. The sign “BONG GIRL” had further extensive marketing and licensing to companies in vastly different product categories, not only with products associated with the motion pictures, e.g. nails, cosmetics, dolls, cards, calendars, and others. Relevant consumers at the sight of the disputed mark would conceive nothing but the cinematic heroine in the film. The Board, therefore, considered that “BOND GIRL” has become worldly famous as a cinematic heroine that appeared in the “007” film series.
The Board continued in analyzing efforts made by Danjaq to enhance the commercial value of “BOND GIRL” by means of trademark registrations in various jurisdictions and licensing to different product categories.
The Board finally concluded that taking into account the foregoing, since it appears that the applicant makes less contribution to establishing reputation and goodwill on “BOND GIRL”, it shall be impermissible for the applicant to monopolize the term on service in question.
To prevent damage to public order, the disputed mark shall be retroactively invalidated in contravention of Article 4(1)(vii).
In the meantime, surprisingly, the Board denied Danjaq’s allegation regarding a likelihood of confusion because “BOND GIRL” is just famous for cinematic heroine, not as a source indicator of Danjaq.
The Japan Patent Office (JPO) has announced the measures it has taken to help foreign users for trademarks during the coronavirus outbreak.
Response to the office action
JPO takes flexible approaches to allow a delayed response on the condition that the applicant requests for remedy either in the following ways:
To file a written request and its reason before the lapse of a deadline in advance.
To file the response with an additional written explanationwithin a certain period after the deadline.
[Example of reasons]
Due to the negative effects of the COVID-19, Company ____ for which applicants work/Office ___ where representatives of applicants work had been closed from _____ to _____ in 2020, and the applicants/the representatives are (were) not able to implement the prescribed procedures. Nonetheless, since it has become possible to implement the procedures from ____, 2020, please accept ____ as a valid procedure.
Priority documents
JPO allows submitting priority documents within two months after deadline, namely five months from the application date, provided that the applicant simultaneously files a statement of reasons for the failure to meet its original deadline.
Appeal to refusal decision
JPO considers a request for appeal against the examiner’s decision of refusal valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the original deadline. It is required to state delayed reasons in the appeal brief.
Payment of registration fee
JPO considers payment of registration fee valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the original deadline. It is required to file a statement of delayed reasons simultaneously.
Application for renewal
JPO accepts application for renewal of trademark registration valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the expiry date. It is required to file a statement of delayed reasons simultaneously.
New transformed Application after revocation of international registration
JPO considers a newly transformed application for Japanese trademark application after the revocation of International Registration valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the original deadline. It is required to file a statement of delayed reasons simultaneously.
More and latest information is available on the JPO website. Click here.
In a trademark opposition at the Japan Patent Office (JPO), French luxury brand HERMES achieved victory to stop the registration of a word mark “D. KELLY” over bags and pouches in class 18. [Opposition case no. 2018-900177, Gazette issue date: March 27, 2020]
Opposed mark
Opposed mark, “D.KELLY” was applied for registration on August 25, 2017 by designating bags and pouches in class 18, and published for registration on May 22, 2018 without any office action from the JPO examiner.
Applicant, a Japanese individual, apparently operates brick-and -mortar shops in Japan and on-line shop to promote hand bags, shoulder bags, tote bags, rucksacks/backpacks and other fashion items. “D.KELLY” is used on the bags and as its shop name.
Hermes Kelly Bag
Opponent, HERMES INTERNATIONAL, a French luxury fashion house, claimed that the opposed mark “D.KELLY” shall be liable for cancellation under Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing the Hermes Kelly Bag and an owned senior trademark registration no. 4341534 for word mark “KELLY” in standard character over bags, pouches and other goods in class 18.
Article 4(1)(xi) is a provision to prohibit from registering a junior mark
which is deemed identical with, or similar to, any senior registered mark.
Hermes argued opposed mark is perceived as
a combination of “D.” and “KELLLY”. The prefix “D.” per se lacks distinctiveness
in relation to the goods in question. The mark as a whole does not give rise to
any specific meaning at all. As a consequence, the literal portion of “KELLY” shall
play a dominant role as a source indicator. If so, opposed mark is deemed confusingly
similar to “KELLY” owned by Hermes. Besides, both marks designate same goods in
class 18.
Article 4(1)(xv) provides that a mark shall not be registered where it is likely to
cause confusion with other business entity’s well-known goods or services, to
the benefit of brand owner and consumers.
Given a remarkable degree of reputation of Hermes “Kelly” Bag in relation to bags, relevant consumers with an ordinary care would associate “D.KELLY” with Hermes and confuse its source when used on bags and pouches because “KELLY” is not a common surname in Japan and thus the term is more distinctive than “D.”.
JPO decision
The Opposition Board of JPO sided with
Hermes and decided to cancel opposed mark by stating that:
From the produced evidences, Hermes has continuously used the cited mark on bag since 1956, inspired by an icon, Princess Grace Kelly of Monaco. The bag has been advertised or publicized in fashion magazines and internet frequently. Annual sales consecutively reach in the range of JPY 1.6 to 4.6 billion, which amounts 2,000 to 4,000 bags in quantity, for the past fifteen years. The Board admits a high degree of reputation and popularity of opponent mark “KELLY” as a source indicator of Hermes bag.
The Board considers opposed mark is a compound mark of “D” and “KELLY” placing dot(.) in-between. Since an alphabetical letter “D” lacks distinctiveness, relevant consumers would conceive the portion of “KELLY” as a dominant source indicator. If so, opposed mark may give rise to a meaning of Hermes brand bag, identical pronunciation and appearance with opponent’s mark. It is unquestionable that goods in question belongs to that of the citation.
Provided that Hermes “Kelly Bag” has been rather known for in a name of “Kelly Bag” than “Kelly”, the Board finds a high degree of similarity between the marks in relation to bags. If so, it is undeniable that relevant consumers and traders are likely to confuse opposed mark with Hermes “Kelly Bag” or misconceive a source from any entity systematically or economically connected with Hermes International.
Based on the foregoing, opposed mark shall be liable for cancellation based on Article 4(1)(xi) and (xv).